Reading The Bilski Tea Leaves For What The Supreme Court Thinks Of Software Patents

from the there's-still-a-possibility-there dept

Since it's been a week or so since the Bilski ruling, and as more people have had more time to look at and sift through the rulings in greater detail, some are realizing there may actually be a light at the end of the tunnel for those who dislike software patents. Contrary to the claims of the IEEE, the ruling did not, in fact, come out and say that software patents are legit. It sidestepped that question -- in part due to Justice Scalia's decision to opt-out of two sections of Kennedy's majority opinion.

Back in 2007 I noticed that Justice Scalia (along with Stevens and Breyer) was asking questions that suggested skepticism about the patentability of software. Scalia's position in Bilski confirms that impression: Whenever Justice Kennedy waxes poetic about the Information Age, Justice Scalia gets off the bus. The result is an exceptionally narrow holding that doesn't give much comfort to partisans on either side.

Larry Downes, in looking over the opinions notes something very similar (as part of a much longer analysis of the ruling), in that Scalia seems to very clearly signal that he does not agree with the court's State Street ruling, which is the ruling that opened the floodgates for all sorts of software to be patented:

As noted, Scalia joined all of Justice Kennedy's opinion other than the two sections expressing concern about the impact "machine-or-transformation" would have on what Kennedy refers to repeatedly as inventions of "The Information Age."

There's no way to know why Scalia declined to join those sections (and, therefore, robbed them of precedential status), but one clue can be found in a third concurrence, this one by Justice Breyer, which Scalia joined in part.

...

Scalia joins Part II of Breyer's opinion, which tries to summarize the points on which all nine Justices are, at the end of the day, in agreement. (All nine, of course, voted to affirm the Federal Circuit's rejection of Bilski's application. The only question had to do with the reasoning for that rejection.)

Breyer returns to the cases from which the Federal Circuit derived the "machine-or-transformation" test, and notes that "transformation is the clue to the patentability of a process claim that does not include particular machines." (emphasis in original)

The error of the Federal Circuit, then, was to treat "machine-or-transformation" not as a test, but as "the exclusive test." (emphasis in original) And "machine-or-transformation" is still a far better test, Breyer (with Scalia) goes on, than the much broader statement from State Street ("useful, concrete and tangible result") that started this whole mess.

Here's the kicker. Breyer and Scalia agree that "[t]o the extent that the Federal Circuit's decision in this case rejected [the State Street] approach, nothing in today's decision should be taken as disapproving of that determination."

So, there you have it. Scalia doesn't like State Street and doesn't hate "machine-or-transformation."

Finally, an analysis over at Patently-O by Shubha Ghosh also suggests that the Supreme Court is signalling that it's not a fan of the State Street decision, and thinks it's important for the Federal Circuit to establish a different test for software patents:

Specifically, the Court has now revived the Gottschalk-Parker-Diehr line of cases, which were established before the creation of the Federal Circuit and which the Federal Circuit had distilled over time into the expansive "useful-concrete-tangible" approach to patentable subject matter and then into the "machine or transformation test." In effect, the Supreme Court by reviving its precedent has negated over twenty-five years of the Federal Circuit's attempts at doctrine. This revival opens up possibilities for examiners to rethink the relationships among process, machine, and the physical world. "Dubious" patents may be rejected because the physical phenomenon is trivial or too preemptive of the field. Patent claims might require closer connection to a machine embodiment as opposed to an abstracted, disembodied form. An interesting question to ask is whether the patent at issue in State Street would survive the analysis proposed by Bilski. On the one hand, the asset allocation method at issue is arguably as abstract as the hedging method. On the other hand, the method seems closely tied to a machine to give the process some specific limits.

So, what does this mean for folks who are troubled by software patents? Well, Bradley Kuhn has a few suggestions, but I would imagine some folks are out there scouring the country for a potential new test case that really zeroes in on the question of what test should be used to judge whether or not a software is patentable. Right now we have an effectively clean slate, but it doesn't mean that software is, inherently, patentable. It just means the courts still need to determine the appropriate test, and it appears that an important bloc of Supreme Court Justices are at the very least open to a rather strict test on software patentability.

Reader Comments

The sad thing about this is that like in the 80's that people passed some stupid laws to protect industries, they will do the same thing now, and in 2030 we probably will see another "bail out", other economic meltdowns and so forth.

Web Giants came along without any special laws for them they become what they are because they were left alone to flourish, the road to success is littered with failures, thousands of web projects didn't happen but those that did are strong for now until they get legal crutches. Thousands of software companies came and go.

It is part of the circle of life, they are born and they die, not letting those things die is depriving the business market of renewal and innovation, that comes from the struggle to survive. Taking away the strugle takes away the need to innovate, improve and learn.

Rome took a 1000 years to collapse, the only super power in the world may be done in a 100.

mostly hopeful speculation by the anti-patent people, trying to read something into the decision that just isnt there. quite simply, the court did not rule against software patents, and until another case makes it to scotus that deals directly with the issue, the status quo is what what you have. all the tea leaves in the world will not change that reality.

oh, and the lead time to get to scotus is, what, 5 to 10 years before a case can make it through all the lower courts and appeals? change will not come from the courts, it will come from the halls of congress.

Re:

If the ruling does leave open the issue of which test to use to decide if a business process and/or software is patentable as it appears to then lower courts may, legally, change the test they use to make that determination quite legally and in line with this ruling without waiting for SCOTUS to rule specifically.

Groklaw concurs and goes a bit further

For what it's worth, PJ, at Groklaw has written a long, deep post that basically comes to the same conclusion as Mike though she seems the think the death of business methods patents will come more quickly than software patents.
She focuses more on Justice Stevens than on Justice Scalia but the trail leads to a the same conclusion.
One of the arguments against software patents that PJ has used over the years is that, at the end of the day, all software boils down to Please show me something patentable in software that is not an algorithm. I mean "show me" literally. Show me in the software code something patentable that is not an algorithm, since algorithms are not patentable subject matter. And that's her challenge to the TAMs of the world, who is presumably a TAPJ(?) though that doesn't roll off the tongue quite so nicely, one which, like most others, he hasn't answered yet.

Re: Re: Groklaw concurs and goes a bit further

Well, I'm far from a math whiz or a code monkey, but I think I can wrap this up decently.

The process can be original and creative. By that I mean that it can involve entirely new ways of doing things that have been previously undefined.

The algorithm is a series of steps that are all part of a realm that has already been defined: math. All the steps do is manipulate a reality that is already known or relatively obvious in that it follows mathematical law. Unless a part of the algorithm literaly BROKE mathematical law and functioned outside of it, it just isn't original. Essentially, it's already known, even if the math hasn't been specifically manipulated in that manner before.

Re: Re: Re: Re: Groklaw concurs and goes a bit further

Re: Re: Re: Groklaw concurs and goes a bit further

So if I create an algorithm that breaks the laws of mathematics and functions outside of them, then I can patent it? So if I create an algorithm that shows that 2 + 2 = 5 for exceedingly large values of 2 (when approaching the vertex of a spatial anomaly (black hole) and traveling near the speed of light for example), then I can patent it and sue everyone who says 2+2=4?

All parts of anything used in a process are already defined: as a part of reality. Unless the process 'breaks' reality and functions outside of reality then it shouldn't be patentable? Right? There is nothing being done today that hasn't been done or thought of previously (even if it wasn't patented or recorded, someone out there has thought about it...) Reality is already known, even if it hasn't been specifically manipulated in that manner before.

Re: Re: Re: Re: Groklaw concurs and goes a bit further

Hmm, interesting. I was thinking more along the lines of designing something that simply utilizes the rules of math as defined/discovered by man wouldn't be patentable, whereas reality is something far more reaching and grandios (sp?).

But I suppose if you believe in Fredkin style Digital Philosophy, and if you believe that the entire universe is basically one big Turing Complete Machine, then it's all just math anyway....

Re: Re: Re: Groklaw concurs and goes a bit further

The process is a series of steps that are all part of a realm that has already been defined: physics. All the steps do is manipulate a reality that is already known or relatively obvious in that it follows physical law. Unless a part of the algorithm literaly BROKE physical law and functioned outside of it, it just isn't original. Essentially, it's already known, even if the physics hasn't been specifically manipulated in that manner before.

Fixed that for you.

Sorry, but you still have not convinced me that there is any difference between an "algorithm" and a "process". Not to mention that, as the comic I linked to mentions, physics is nothing more than applied mathematics.

Re: Groklaw concurs and goes a bit further

pj's challenge to anyone is meaningless, because she isnt one of the nine wise people on the bench. when she gets there, she can challenge. until then, she is just a citizen with an opinion (and one the current court does not appear to have agreed with).

Re: Re: Re: Re: Groklaw concurs and goes a bit further

Your problem is, however, that you keep missing with that bat of yours labelled "special moron experience". Either that or it's a nerf bat marked "property of a complete and total idiot", take your pick.

Re: Re: Re: Groklaw concurs and goes a bit further

my opinions are entirely backed up by the ruling, or should i say the lack of a ruling. plenty of people (mike included) are trying to "read the tea leaves" when in reality there are isnt much there.

plain and simple, they didnt rule against those types of patents, and it will take years for another case to make it to scotus. those are not opinions, those are facts.

she is more than welcome to have an opinion, they are like belly buttons (or another area slightly lower and to the rear), everyone has one. but the only facts in the case are the that scotus did not rule against these patents, and there are no other cases currently on the horizon that would change that.

Re: Re: Re: Re: Groklaw concurs and goes a bit further

I think people should be asking why those patents need to exist in the first place.

They were put there so do something what it was?

- Teach others?
Today patents don't teach anything and it is on purpose because the more specific you are the harder it is to claim damages or that it was infringed upon, besides open source took care of that did it not? People are developing software for free and are teaching others how to do it and patents actually harm people who want to teach others.

Re: Re: Re: Re: Re: Re: Re: call it a day

Re: Re: Re: Re: Re: Re: Re: Re: call it a day

It's almost like they're all linked in some way! Quick, let's patent and copyright and trademark everything possible as it shouldn't cause any problems, whatsoever, especially in an era where nearly everyone has a supercopying machine recorder in their pockets.

No tea leaves to be read

After reading the abstract, my conclusion was the ruling was a strong message to the Patent Office, and the bad outcome for the plaintiffs was happenstance.

Their message: if you just follow the law and the legal precedents from the Judiciary then we won't have to deal with this crap. And, oh, by the way, the machine or transformation test is ok, but if you would just look at what we've said *is not patentable* and used your brains we wouldn't be here.

Of course, the software/business process/mindless junk patent lawyers will hail this as a great ($$$$$) victory.

Re: almost beer time, punks

On the fence

I'm a programmer and not a litigation wonk, but I think the traditional idea of a patent is a slippery slope... Before software existed it wasn't as obvious and didn't matter much, but now it intuitively (though perhaps not technically/legally) applies to software.
The same type(s) of ingenuity which Edison and Tesla used to harness electrons now produces algorithms which are math technically but works of art psychologically and economically. The motions and parts of a generator loosely correspond to functions and variables, respectively.
That being said, I don't think software should be both copyrightable and patentable; one or the other (or both) should be trimmed back. But it's not immediately obvious which one is more relevant, from an all-around perspective. It's text (copyrightable) that does something (patentable); before software the nearest concept was a magical incantation, and courts don't concern themselves with fictional ideas.
I suppose the best approach would be to determine the most-desirable powers for software licenses to be granted, for the general benefit of society, and match those to copyrights, patents, or a new concept that's somewhere in between.

Re: On the fence

Oh dear, I subconsciously assumed that linebreaks would be automatically inserted in HTML mode. Let's try that again, this time with Preview.

I'm a programmer and not a litigation wonk, but I think the traditional idea of a patent is a slippery slope... Before software existed it wasn't as obvious and didn't matter much, but now it intuitively (though perhaps not technically/legally) applies to software.

The same type(s) of ingenuity which Edison and Tesla used to harness electrons now produces algorithms which are math technically but works of art psychologically and economically. The motions and parts of a generator loosely correspond to functions and variables, respectively.

That being said, I don't think software should be both copyrightable and patentable; one or the other (or both) should be trimmed back. But it's not immediately obvious which one is more relevant, from an all-around perspective. It's text (copyrightable) that does something (patentable); before software the nearest concept was a magical incantation, and courts don't concern themselves with fictional ideas.

I suppose the best approach would be to determine the most-desirable powers for software licenses to be granted, for the general benefit of society, and match those to copyrights, patents, or a new concept that's somewhere in between.